Intellectual Property Strategy

Is a Patent Really Defensive?

I have often compared patents to castles when discussing high stakes invalidation exercises. Some are inherently stronger than others, but given enough resources, none of them are invulnerable.

Castles, like patents, are often viewed as defensive structures. So it was interesting to hear a narrator on a History Channel episode about great fortifications describe castles as tools of aggression…an inherently offensive and not a defensive weapon. Why would this be so? Answer: because it conforms perfectly to the well-known strategic principle of the offensive defense. The idea behind the offensive defense is to capture something of value to an opponent so that he must attack you where you are prepared to receive him in order to get it back. What better way to cause your opponent consternation and change the nature of the game than to build a castle on land he called his own?

What better way also to understand what it really means to have a patent strategy? It takes a lot of resources to build castles, and there really isn’t a whole lot of point in building one if there isn’t someone out there who might want to attack it. After building such a castle, you can consider building a network of castles that people will want to attack so that if one falls, others still stand, and ideally whoever should wish to attack will decide the better against it.

5 Comments on “Is a Patent Really Defensive?”

Agree Robert – another way to characterise patents of course is by analogy to the gold rush days when prospective miners could ‘stake out’ a claim by pegging out an area of land they called their own. In that sense patents might be defensive – to protect the territory that you call your own, but might equally be used offensively – if you were to put your stakes around an area very close to the areas of a number of competitors. (Of course patents can also be dropped right in to the middle of someone else’s area if the claims are sufficiently narrow and the subject matter described in sufficient detail.)

Interesting viewpoint, but I am not sure I completely agree with your analogy. Most invalidation attacks on patents (outside of oppositions, which are comparatively rate) only come in response to the patent being asserted on the other side. Outside of this, the vast majority of patents are ignored or at least kept away from by their opponents.

Also a patent built on ‘land’ previously owned by the other side may lack novelty, inventive step, or broad claims. Instead new ‘land’ owned by neither side is probably more productive, as implied by Duncan.

Instead, the classical defensive value of patents is the implied risk of being asserted against the other side in response to an infringement allegation. Or in castle speak, your castle could be used to launch an attack on the other side when an opponent’s castle attacks your land. But I am not too sure how often this strategy happened in real life.

Thanks Mike – I don’t think Robert was referring to invalidity attacks, will let him explain… (Also – as I explained in my below comment – patents can (in fact most patents do) claim subject matter which is within the scope of earlier patents – narrower embodiments – specialised brake pads fall within the claims of the first brake patents, etc.)

I agree with points below, although I am thinking broader
than that. Invalidity is one way to
attack a patent for sure…of course it has a drawback in that it can very well
destroy the patent (castle) if the threat of the same does not lead to some
other settlement first. Castles of old
could change hands for all sorts of reason other than an actual assault, from
siege to a strategic marriage among nobility, and likewise in patents we have buyouts,
mergers, deals, financial distresses, licenses, many ways in short to render a
competitive patent an asset, or at least less of a problem.

The history channel made a point that while strategists,
military and otherwise, tend to think of opponents as either on the offensive
of on the defensive, there really is, and has always been, two other flavors –
an offensive launched with a defensive purpose in mind and a defense
established with an offensive purpose in mind.
The castle fits into this latter category when used as a true military
instrument, and so may patents. The
reason is that the castle/patent occupies some control point in the geography/technology
from where it could disrupt the plans of other entities. The asserter of a patent, just like the
sovereign launching a disruptive force from his castle, risks that the response
of the disrupted will be to attack the castle equivalent, the patent.

On the point about keeping away from…a patent often does its
best work for its owner when it does change the behavior of potential
competitors so that they do keep away from it.
Claiming new technical territory is an aggressive move from the point of
view of other entities who might otherwise wish to own the IP rights to that
territory. It creates both a rational
and psychological concern that by encroaching too close to those IP rights, the
owner of the patent/castle will respond.
This means that the entity will need to secure freedom of operation by
some means, design around, or take a chance and then deal with the
consequences.

Other factors come into play, which could fit the mold. A patent, like a castle, requires resources
to make it useful. A company with a
patent and no resources with which to enforce it becomes an empty castle with no
army from which to actually command the land…unless it falls into better resourced
hands.